IP Law Daily, COPYRIGHT—E.D. Va.: Prevailing defendants awarded attorney fees in architectural copyright infringement suit, (Nov 16, 2015)

By Jody Coultas, J.D.

Lessard Design, Inc. has been granted attorney fees and costs by the federal district court in Alexandria, Virginia, as the prevailing party in a copyright infringement suit filed by Humphreys & Partners Architects, L.P. (Humphreys & Partners Architects, L.P. v. Lessard Design, Inc., November 13, 2015, Ellis, T.). An apartment building developer and contractor were also awarded attorney fees and costs.

Humphreys, which designs multi-family residential buildings, alleged that competitor Lessard infringed its copyright in a high-rise residential tower by submitting a high-rise apartment building design that allegedly included nine substantially similar features to Humphrey’s design. The apartment complex project developer and builder were also included as defendants. At trial, Lessard’s expert explained how the designs differed with respect to size, footprints, floorplans, and exterior appearances, which Humphrey’s did not refute. A trial court awarded Lessard and the other defendants summary judgment, which was affirmed by the Fourth Circuit on appeal.

Each of the defendants moved for reasonable attorney fees and full costs.

Prevailing party. Lessard was a prevailing party in this case, according to the court. Humphreys argued that Lessard was not a prevailing party because it lost on a counterclaim and, citing cases from the Second and Eighth Circuits for the proposition that neither litigant is the prevailing party when a defendant’s failed counterclaim was something more than purely defensive. However, a prevailing party does not have to be a completely prevailing party. Lessard received the relief they sought in defending against the copyright claim and prevailed on nearly every issue. Also, the cases cited by Humphreys did not stand for the proposition proposed and did not support Humphreys’ argument.

Attorney fees. The Copyright Act does not mandate an automatic award of attorney fees to the prevailing parties. The Supreme Court has required courts to use an “evenhanded approach” so that no distinction is made between prevailing plaintiffs and prevailing defendants. There is no precise rule for determining attorney fees, only that courts exercise equitable discretion. The Fourth Circuit directs courts to look at: (1) the motivation of the parties; (2) the objective reasonableness of the legal and factual positions advanced; (3) the need in particular circumstances to advance considerations of compensation and deterrence; and (4) any other relevant factors.

Although it was a close quesiton, the court found that Humphreys’ legal and factual positions were not objectively reasonable. The infringement action was based on the plausible theory that it did not need to show how individually protected extrinsic elements relate to one another. The appellate court ultimiately determined that this theory was contrary to the law of the circuit, however. Despite the lack of Fourth Circuit precedent directly addressing the proposed legal theory, the outcome of the case was not unexpected based on prior rulings. The claims based on ideas, concepts, and individual standard features, which are excluded as bases for infirngement under the Copyright Act, were not objectively reasonable. Also, a recent line of cases had clarified the role of individual features in extrinsic similarity analysis in architectural copyright cases. Because the positions were not frivolous, this factor was accorded less weight than would otherwise be appropriate.

The motivation of the parties and the need to advance considerations of compensation and deterrence weighed in favor of awarding attorney fees, according to the court. Without the prospect of attorney fees, a defendant’s litigation costs would often exceed the private benefits to the defendants, making defendants more inclined to settle. Fee award also deter frivilous lawsuits. Here, there was evidecne that Humphreys filed suit to force a settlement rather than to actual protect its copyright. Humphreys also aggressively pursued an unusually large damages claim.

The court, however, found that the attorney fees requested were not reasonable based on excessivly high hourly rates and deficient descriptions of many tasks.

Lessard was awarded over $841,000 in attorney fees and $2,500 in costs. The developer was awarded over $840,000 in attonrey fees and $36,400 in taxable costs. The apartment builder was awarded over $167,000 in attorney fees and $7,000 in taxable costs.

Taxable costs. Lessard’s request for taxable costs award was reduced by the court. The court held that Lessard could not recover costs incurred by ordering a deposition transcript and additional fees incurred for expedited transcripts without proof the expedited delivery was not necessary to the litigation.

Full costs. The general bill of costs statutes limited the additional costs sought under Section 505 of the Copyright Act. There is currently a circuit split on whether full costs encompasses more than costs recoverable pursuant to Sections 1821 and 1920.

Additional costs. Defendants were not able to recover electronically stored information fees and outside duplicating costs, expert witness fees, outside counsel, legal research and investigation, and travel expenses, deposition videography, and other costs.

The case is No. 1:13-cv-433.

Attorneys: Tara Lynn Renee Zurawski (Jones Day) for Humphreys & Partners Architects, L.P. Christopher P. Foley (Finnegan Henderson Farabow Garrett & Dunner LLP VA) for Lessard Design, Inc. and Lessard Group Inc. Antigone Gabriella Peyton (Cloudigy Law PLLC) for Clark Builders Group, LLC., PDT Builders, LLC and The Penrose Group.

Companies: Humphreys &Partners Architects, L.P.; Lessard Design, Inc.

Cases: Copyright VirginiaNews